A recent decision of the English Court of Appeal has dealt with the concept of concurrent good faith use of a trademark.
The Facts
IPC Media Limited (“IPC”)
IPC is the publisher of IDEAL HOME magazine which is directed to the home interest market. The magazine is very well known and has been published since 1920. Substantial goodwill is associated with the trademark.
Since 2005, IPC has operated a website which contains various online features and provides advice relating to home decoration and improvement and lifestyle. In 2009, IPC launched an online shopping guide called IDEAL HOME shop which allows customers to view and purchase a variety of home interest goods over the Internet. In 2006, IPC applied for and subsequently obtained a trademark registration for the words IDEAL HOME in association with retail services relating to the provision of a variety of house wares and related goods by mail order or via the Internet.
Media Ten Limited (“Media Ten”)
In 1908, the Daily Mail newspaper commenced to operate the DAILY MAIL IDEAL HOME Exhibition (the “Exhibition”). The Exhibition has been very successful and its name was changed to the IDEAL HOME SHOW in the 1990s. Media Ten purchased the Exhibition in 2009. In 2000, the Ideal Home Show opened a website under the name Ideal Home and in 2008 this was updated to include an online shop. In May 2012, Media Ten launched a revised website with a dedicated website shop under the IDEAL HOME Show name.
Proceedings
As a result of the activity in 2012, IPC brought an action for infringement, Media Ten denied infringement and counterclaimed for a declaration of invalidity of the trademark registration.
The action proceeded to trial. The trial judge dismissed the action and the counterclaim. In substance it was concluded that a significant number of consumers would recognize the name IDEAL HOME when used in relation to home interest products as the trademark of the magazine or of the Exhibition and further if they thought about it could believe that the magazine and show were part of the same business or otherwise connected. As a result, Media Ten was entitled to rely upon the doctrine of honest concurrent use as established in the Budweiser case.
The Appeal
IPC appealed from the decision to the Court of Appeal. The appeal was dismissed and the court relied on its previous decision on the Budweiser case. Although, it was observed that the Budweiser case was slightly different since in that case, while there was honest concurrent use of the Budweiser mark, the respective products of the two brewers – Budvar established in the Czech Republic and Anheuser-Busch – were clearly identifiable as being produced by different companies.
Notwithstanding this difference, the court found that this was one of those rare cases where the use of the mark complained of was honest and that it did not and will not have an adverse effect upon the registered trademark because the guarantee of origin of the mark remains the same as it always has been. The guarantee in this case was different from the typical case since the same mark was used by separate entities.
The Canadian Position
Section 21 of the Canadian Trademarks Act is directed to protecting the rights of a person who has, in good faith, used a confusing trade mark or trade name prior to the date of filing of the application for registration of a registered trade mark. In proceedings relating to a registered trademark, which has become incontestable by virtue of the expiration of the five year period set out in the Act, if the Federal Court considers that it is not contrary to the public interest that the continued use of the confusing trademark or tradename should be permitted in a defined territorial area concurrently with the use of the registered trademark, the court may permit the continued use of the unregistered trademark within that area with an adequate specified distinction from the registered trademark.
There are no decisions interpreting this section but it would seem to be potentially applicable to cases similar to the IDEAL HOME case or the Budweiser case.
John McKeown
Goldman Sloan Nash & Haber LLP
480 University Avenue, Suite 1600
Toronto, Ontario M5G 1V2
Direct Line: (416) 597-3371
Fax: (416) 597-3370
Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.